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I'm an engineer and I work for an IT company that wants to patent an invention of mine, an electronic device with a certain communication protocol. We consulted a patent lawyer who said that the thing invented by me was kind of similar (and the similarity was determined by the lawyer, who is not an expert in the field of the invention) to something described in another patent and thus already invented, yet as things weren't exactly the same we could patent my invention for the merit of pointing its scientific value but could never claim the exploitation rights.

I have read that "a patent does not grant the patent owner any right to make their own invention. Rather, the patent gives the patent owner the right to exclude others from making, using, selling, or importing the invention. The patent holder's right to make their own invention is dependent upon the rights of others and whatever general laws might be applicable. Another party may own a patent that will prevent the patentee from utilizing her/his own invention."

And my questions are:

  1. How is it possible if there's already another patent with a "similar" invention, that the lawyer says I can still patent my invention for the sake of science but never sell exploitation rights? Wasn't him supposed to say that I cannot patent my invention?

  2. How is the similarity degree measured by a lawyer who is not an expert in the area of the invention, such that my invention qualifies for scientific but not for exploitation-right kind of patent?

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Congratulations on moving technology forward!

Re your first question -- the lawyer may be saying that she or he thinks you've invented an improvement or variation of something that someone else patented. Imagine a world where someone had a patent on pens, but the patent never contemplated the idea that you could have a pen with the ability to change colors. If you received a patent on a multi-color pen, then you might be able to prevent others, even the first patentee, from making such pens (the right to exclude) but you might not be able to make such pens yourself (maybe this is the right to exploit you mention) because the first patent gives the first patentee the right to exclude others from doing that.

Does that help?

  • Thank you very much Ben. Following your example, if someone decides he wants to manufacture colorful pens then who gets the money? Both the inventor of the pencil and me for inventing the colors for it or nobody as I don't have the exploitation rights for pencil and the inventor of pencils doesn't have it for colors? So If I decided to manufacture colorful pencils then would I have to pay the inventor of pencils and if he wanted to put colors into his pencils then would he have to pay me? – VMMF Mar 17 '16 at 23:07
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    Some caveats: there could be wrinkles or contractual arrangements that are particular to your situation. Also, just because you have a patent doesn't mean you can get money. Others may disagree that your patent applies to them or think your patent is invalid. Other times, it can simply be more trouble than it's worth. But yes, each of you might need the other's permission to make colored pens, if she has a patent on pens and you have a patent on colored pens. – Ben Kleinman Mar 18 '16 at 0:01

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